Patent Docs

USPTO Releases Performance and Accountability Report for FY 2016

February 6, 2017

By Donald Zuhn —

The U.S. Patent and Trademark Office recently released its Performance and Accountability Report Fiscal Year 2016. In describing the USPTO's strategic and performance-planning framework, the 2016 report reminds readers that the Office issued a new strategic plan in 2014, the 2014-2018 Strategic Plan. The report reiterates that the 2014-2018 Strategic Plan "demonstrates the progress made to date by building on the tangible successes of recent years with a focus on achieving the USPTO's vision as a global IP leader by:

• Establishing the optimal pendency and quality levels for both patents and trademarks that will enable the USPTO to operate efficiently and effectively within the expectations of the IP community;
• Administering effectively the provisions of the AIA;
• Continuing to transform the USPTO with next-generation technology and services;
• Maintaining a strong and diverse leadership team, agile management structure, and a diverse and engaged cadre of employees in achieving the agency’s mission and vision;
• Continuing to work with other government agencies, Congress, and USPTO’s global partners to establish IP systems that benefit innovation, create jobs, and lead to strong economies around the world; and
• Recruiting and retaining the highest quality employees to accomplish the agency’s important work."

The 2016 Report specifies ten key performance outcome measures for which the Office has developed annual performance targets. According to the report, the Office met its annual performance targets for eight of the ten performance measures. Missing from this year's report was the Patent Quality Composite Score performance measure (for FY 2015, the Office did not meet its target for this measure, hitting eight of eleven performance targets). With regard to the omitted performance measure, the 2016 report explains in a footnote that:

The USPTO is working with internal and external stakeholders to reevaluate the entire quality process at the USPTO by engaging in public forums and roundtables to increase the effectiveness, clarity, and simplicity of the USPTO's quality review process by focusing on excellence in work products, excellence in measuring patent quality, and excellence in customer service. As part of this effort, the USPTO aims to define and introduce revised quality metrics based on stakeholder input by October 2016. Because the precise contours of the metric will likely change in the upcoming years, it is not useful to portray trends for the current measure.

With respect to the remaining performance measures, two of the ten measures fall within the Office's first strategic goal, which concerns optimizing patent quality and timeliness. In particular, average first action pendency was 16.2 months (higher than the 14.8-month target, but lower than the 17.3-month average first action pendency of FY 2015), and average total pendency was 25.3 months (lower than the 25.4-month target and lower than the 26.6-month average total pendency of FY 2015).

Table 2 of the report provides data for the patent-related performance targets for FY 2012 to FY 2016 (click on any table to expand):

The report also notes that the number of applications filed increased from 618,062 in FY 2015 to 650,411 in FY 2016, which constituted a 5.2% increase in filings (see Table 1 below). This followed a slight decrease in application filings in FY 2015 and a 2.8% increase in application filings in FY 2014.

The report also indicates that while the Office accepted more than 600,000 patent applications for the fourth straight year and topped 500,000 applications for the seventh consecutive year (see Table 2 below), it was able to reduce the number of applications awaiting action from 592,417 in FY 2015 to 570,074 in FY 2016 (see Table 3 below). The total number of pending applications also decreased from 1,099,468 in FY 2015 to 1,070,163 in FY 2016. It was the Office's third consecutive reduction in number of applications awaiting action and sixth consecutive reduction in total number of pending applications.

After dropping from 303,930 utility patent issuances in FY 2014 to 295,459 in FY 2015, patent issuances were once again on the rise in FY 2016, hitting 334,107 (see Table 6 below).

As noted above, the results for first action and total pendency were mixed, with first action pendency coming in above the Office's target, and total pendency coming in below the Office's target (see Tables 4 and 5 below). And the goals for FY 2017 present even tougher challenges: for first action pendency, the annual performance target drops from 14.8 months for FY 2016 (which the Office failed to meet) to 14.5 months for FY 2017, and for total pendency, the annual performance target drops from 25.4 months in FY 2016 (which the Office met) to 23.5 months in FY 2017.

When comparing pendency statistics by Technology Center, Tech Center 1600 (biotechnology and organic chemistry) produced the best average first action pendency (12.5 months), and Tech Center 2100 (computer architecture, software, and information security) produced the worst average first action pendency (19.6 months) (see Table 4 below). As for total average pendency, Tech Center 2800 (semiconductor, electrical, optical systems, and components) produced the best total average pendency (23.1 months), and Tech Center 3700 (mechanical engineering, manufacturing, and products) produced the worst (30.0 months).

Finally, the report indicates that 1,565 inter partes review cases were filed in FY 2016, down from 1,737 in FY 2015, and 24 post grant review cases were filed in FY 2016, up from 11 in FY 2015 (see Table 14 below).

For additional information regarding this and other related topics, please see:

• "USPTO Issues Performance and Accountability Report for FY 2015," March 3, 2016
• "USPTO Issues Performance and Accountability Report for FY 2014," April 7, 2015
• "USPTO Releases Performance and Accountability Report for FY 2013," January 9, 2014
• "USPTO Releases Performance and Accountability Report for FY 2012," November 28, 2012
• "USPTO Releases Performance and Accountability Report for FY 2011," November 30, 2011
• "USPTO Releases 2010 Performance and Accountability Report," November 17, 2010
• "USPTO Announces 'Highest Performance Levels in Agency's History' in 2008," November 18, 2008
• "USPTO Announces 'Record Breaking' 2007 Performance," November 15, 2007
• "Patent Office Announces Record-Breaking Year," December 27, 2006
News from Abroad — Does an SPC for a Biological Product Cover a Biosimilar? Guidance from Norway

February 5, 2017

In December 2016, the Norwegian Court of Appeal handed down its decision in Pharmaq v Intervet^[1], which concerns the validity of Intervet's SPC for a viral vaccine for preventing pancreatic disease (PD) in salmonid fish. Followers of SPC case law will be aware that questions relating to this case have previously been considered by the EFTA Court^[2], having been referred by the Oslo District Court. The advisory opinion of the EFTA Court was subsequently interpreted by the District Court who found in favour of Intervet^[3]. The recent decision concerns Pharmaq's appeal.

The case is of general interest in that it relates to the extent to which an SPC for a biological product may be considered to encompass closely-related alternatives such as biosimilars. The guidance of the EFTA court was that an SPC is invalid due to non-compliance with Article 4 of the SPC Regulation^[4], to the extent that it has been granted with a wider scope than that set out in the relevant Marketing Authorisation (MA). However, the EFTA Court also proposed that an SPC for a viral vaccine could extend to cover a specific strain of virus encompassed by the claims of the patent but not mentioned in the MA, provided said strain constitutes the "same active ingredient" as the authorised product, and has therapeutic effects within the same indications for which the MA was granted.

Applying this guidance, the Oslo District Court had found in a majority decision that the competing products of Pharmaq and Intervet did constitute the "same active ingredient", thus holding in favour of Intervet. However, reconsidering the EFTA Court's guidance in the light of new evidence before it, the Norwegian Court of Appeal has now overturned that earlier decision.

Claim 1 of Intervet's patent explicitly recited the deposited virus strain (of type SAV-1) that was used in its own vaccine. However, the claim referred also to "closely-related strains which share similar genotypic or phenotypic characteristics". In proceedings relating to the patent, the virus strain (of type SAV-3) used in Pharmaq's competing product was found to infringe the claim by virtue of this "closely-related" feature. Intervet's MA specifically describes the deposited strain used in its own product. Nonetheless, when applying for an SPC from the Norwegian Patent Office, Intervet stipulated a definition of the product which precisely mirrored the wording of claim 1 of the patent, thus including the reference to "closely-related strains".

The Norwegian Patent Office was evidently concerned that this product definition was broader than that provided by the MA, and thus problematic under Article 4 of the SPC Regulation. There is some suggestion that the examiner's preference would have been to limit to closely-related strains of the SAV-1 type, but he found no basis for this interpretation in the patent. Therefore, recognising a legitimate concern that an SPC limited solely to the deposited strain could be easily circumvented, the Office awarded Intervet the benefit of the doubt — in the knowledge that Pharmaq were bringing a legal challenge to the SPC and that the question would ultimately be decided in the courts.

The proceedings before the Court of Appeal spent a considerable amount of effort interpreting the EFTA Court's guidance, and the extent to which Intervet's and Pharmaq's products might be considered to constitute the same active ingredient. As part of their argumentation, Intervet relied upon the decision of the CJEU in Farmitalia^[5]. This long-standing decision established that where a patent claims a chemical compound and the marketing authorisation specifies a particular salt, the SPC is interpreted to cover alternative salts and esters of the same compound, which are in principle therapeutically equivalent. It has been argued (including by Intervet) that similar reasoning should apply for closely-related biological products in order for the purpose of the SPC Regulation to be met.

The Norwegian Court of Appeal recognised the importance of Farmitalia in establishing that the purpose of the SPC Regulation would not be satisfied if therapeutically equivalent salts and esters were not covered by an SPC for a small chemical entity. They also recognised the desirability of establishing a corresponding definition for biological medicinal products which, in line with Farmitalia, prevents third parties from escaping the scope of an SPC by making only minor changes to an active ingredient that otherwise remains therapeutically equivalent. However, they noted that Farmitalia provides limited guidance for biological products (unsurprisingly given the age of that decision) and the Court was concerned also to balance the scope of protection of SPCs for such products against the other objectives of the SPC regulation. In particular, the aim that improved medicinal products should not be kept off the market to the detriment of human or veterinary health. Much of the Norwegian Court of Appeal's decision is thus spent grappling with these conflicting pressures.

They found what they considered to be helpful guidance in a 2009 judgment of the Dutch Appellate Court submitted by Pharmaq, referred to as the "Yeda judgment" (2000809060/1/H3). In that judgment, the Dutch Court upheld the decision of the Dutch Patent Office to grant an SPC only in respect of the specific active ingredient Adalimumab (a monoclonal antibody) mentioned in the relevant MA, despite the patent claims encompassing other antibodies specific for the same target. Yeda had argued that the other antibodies would be expected to have the same therapeutic effect as Adalimumab, and pointed to Farmitalia as supporting grant of an SPC with a broader product definition. The Dutch Court found that it was not proven that other antibodies would have the same therapeutic effect, and furthermore that even closely related biological medical products are qualitatively different to salts and esters of a chemical product. The Dutch Court noted that even minor differences in a biological product could be significant for the quality, safety, and efficacy of the said product.

The Norwegian Court of Appeal adopted much of the same reasoning, stating that for there to be a different active ingredient, the difference between two products must be expressed such that there is a practical and appreciable effect on the quality, safety, and efficacy of the medicine in question. Intervet argued that any such difference must be systematic, consistent and significant in order for two products to be found different. The Court expressed some doubt that a "significant" standard was too high a threshold, but did not need to consider this further since, on the evidence before it, they found that Pharmaq's product was systematically, consistently and significantly more efficacious against SAV-3 infection than Intervet's product.

Having reached this conclusion, the Norwegian Court of Appeal decided that Intervet's SPC was invalid for lack of compliance with Article 4 of the SPC Regulation. The Court noted that this is not a ground for invalidity under Article 15 of the SPC Regulation, and thus was obliged to define Article 15 as "not exhaustive" in order to make their decision. Interestingly, the Court also felt that they had no legal basis to amend the SPC to provide a compliant product definition, even though the guidance from the EFTA Court appeared to suggest such an option. The EFTA Court's guidance was that an SPC would be invalid to the extent that it covers anything other than the authorised product.

The decision of the Norwegian Court of Appeal is not yet final since an appeal to the Norwegian Supreme Court remains possible at time of writing. In addition, it remains to be seen whether the CJEU and/or other national courts will adopt similar reasoning. Nonetheless, we offer the following conclusions and recommendations:

1. Applicants should be alert to the risk involved if the definition of the product offered in an SPC application could be interpreted as broader than the authorised medicinal product — a definition that is too broad may result in loss of the entire SPC and it may be impossible to amend after grant.

2. The approach of the CJEU in Farmitalia for salts and esters of small chemical compounds has been confirmed, but it appears likely that this will not be found to be directly applicable to (complex) biological products.

3. There may be some scope for an SPC to protect biological products that are "therapeutically equivalent" to an authorised product, but it remains unclear how best to define the product in order to allow for this — language relating to a lack of any systematic, consistent (and significant) difference in quality, safety and efficacy may be helpful.

4. Where possible (bearing in mind patent claim scope and time limits) consider applying for a separate SPC based on the applicant's own patent and a competitor's MA. Such an application could use a narrow product definition directed specifically to the competitor's authorised biological product. This will permit an SPC application for the applicant's own product to be presented with a definition that minimises the risk mentioned in 1.

^[1] Translation of decision available here.
^[2] Translation of decision available here.
^[3] Similar status to the CJEU for matters referred by the national courts of the EFTA states: Norway, Iceland, Liechtenstein. Copy of the advisory opinion available here.
^[4] Article 4: Within the limits of the protection conferred by the basic patent, the protection conferred by a certificate shall extend only to the product covered by the authorisation to place the corresponding medicinal product on the market and for any use of the product as a medicinal product that has been authorised before the expiry of the certificate. Full regulation available here.
^[5] C-392/97. Full decision available here.Bottom of Form

This article was reprinted with permission from J A Kemp.
Conference & CLE Calendar

February 5, 2017

February 7, 2017 – "Two Years of Federal Circuit Review of PTAB Proceedings: What We Know and Still Don't Know" (Federal Circuit Bar Association) – 1:00 to 2:00 pm (EST)

February 14, 2017 – "Post-Grant Proceedings: Practical Tips and Strategies in 2017" (Knowledge Group) – 3:00 to 4:00 pm (EST)

February 14, 2017 – "Understanding the ADS: Little Things Make a Big Difference" (U.S. Patent and Trademark Office) – 12:00 to 1:00 pm (ET) on

February 15, 2017 – "Identifying the Effects of Brexit on the Protection and Enforcement of IP Rights" (Knowledge Group) – 10:00 to 11:00 am (EST)

February 16, 2017 – "Trade Secrets and Patents: A Comprehensive Approach to Protecting Intellectual Property — Evaluating the Protection Options, Weighing the Benefits and Risks" (Strafford) – 1:00 to 2:30 pm (EST)

February 22, 2017 – "Patent-Eligibility Update: Abstract Ideas in the Federal Circuit and USPTO" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

March 9-10, 2017 - Advanced Patent Law Seminar (Chisum Patent Academy) – Cincinnati, OH.

***Patent Docs is a media partner of this conference or CLE
FCBA Webast on Federal Circuit Review of PTAB Proceedings

February 4, 2017

The Federal Circuit Bar Association (FCBA) will be offering a webcast entitled "Two Years of Federal Circuit Review of PTAB Proceedings: What We Know and Still Don't Know" on February 7, 2017 from 1:00 to 2:00 pm (EST) at the FCBA Conference Room in Washington, DC. Christopher A. Suarez of Williams & Connolly LLP will moderate a panel consisting of Justin Krieger of Kilpatrick Townsend & Stockton LLP; Derek McCorquindale of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; and Rachel Elsby of Akin Gump Strauss Hauer & Feld LLP. The panel will provide an overview of the Federal Circuit's decisions in IPR appeals to date, provide statistics as well as a detailed discussion of various topics, including developments in claim construction, motions to amend practice, and the Federal Circuit's deferential posture toward the PTAB, and discuss issues that have not yet been resolved or will be resolved en banc, including the issues raised by the Wi-Fi One and In re Aqua Products cases.

The registration fee for the webcast is $125 (non-member private practitioner), $50 (non-member government/academic/retired), or free (FCBA member). Those interested in registering for the webcast, can do so here.
Webcast on Post-Grant Proceedings Strategies

February 4, 2017

The Knowledge Group will offer a live webcast entitled "Post-Grant Proceedings: Practical Tips and Strategies in 2017" on February 14, 2017 from 3:00 to 4:00 pm (EST). Jonathan R. Bowser of Buchanan Ingersoll & Rooney PC, and Vivek Ganti of Hill, Kertscher & Wharton, LLP will provide attendees with practice tips for post-grant validity proceedings. The panel will cover the following topics:

• An Overview of Post-Grant Proceedings
• Current Statistics and Trends
• USPTO Rules for AIA Post-Grant Proceedings
• Estoppel Challenges
• Recent Filings and Decisions
• Strategic Filing Considerations

The registration fee for the webcast is $299 (regular rate) or $199 (government/nonprofit rate). Those interested in registering for the webinar can do so here.
Webinar on Trade Secret and Patent Protection

February 4, 2017

Strafford will be offering a webinar/teleconference entitled "Trade Secrets and Patents: A Comprehensive Approach to Protecting Intellectual Property — Evaluating the Protection Options, Weighing the Benefits and Risks" on February 16, 2017 from 1:00 to 2:30 pm (EST). Steven M. Cohen, Senior Intellectual Property Counsel, Open Text; R. Mark Halligan of FisherBroyles; and Pejman F. Sharifi of Winston & Strawn will provide guidance for IP counsel in determining whether trade secret or patent protection is the optimal mode for inventions and technologies, and outline best practices for counsel to consider in determining the optimal form of protection. The webinar will review the following issues:

• What impact will the DTSA have on patents?
• What impact is the AIA having on trade secrets?
• For what types of inventions is trade secret protection most suitable?
• Which inventions are more suitable for patents?
• What factors should counsel consider when choosing between trade secrets and patents to protect IP?

The registration fee for the webinar is $297. Those interested in registering for the webinar, can do so here.
Webcast on Effects of Brexit on IP Rights

February 4, 2017

The Knowledge Group will offer a live webcast entitled "Identifying the Effects of Brexit on the Protection and Enforcement of IP Rights" on February 15, 2017 from 10:00 to 11:00 am (EST). Steven Baldwin of Allen & Overy LLP, and Dr. Sean Jauss of Mewburn Ellis LLP will provide attendees with an in-depth analysis of the significant effects of Brexit on the protection and enforcement of IP Rights, and highlight the important issues and provide knowledgeable insight with regards to this topic. The panel will cover the following topics:

• IP Rights After Brexit
• Impacts and Implications
• Protection and Enforcement of IP Rights
• The Unitary Patent System
• Recent Trends and Developments

The registration fee for the webcast is $299 (regular rate) or $199 (government/nonprofit rate). Those interested in registering for the webinar can do so here.
USPTO Patent Quality Chat Webinar Series

February 4, 2017

The U.S. Patent and Trademark Office will be offering the next webinar in its Patent Quality Chat webinar series from 12:00 to 1:00 pm (ET) on February 14, 2017. Sandie Spyrou, Supervisor, Office of Patent Quality Assurance, and Mary Beth Jones, Supervisor, Office of Patent Quality Assurance, will discuss "Understanding the ADS: Little Things Make a Big Difference."

Instructions for viewing the webinar can be found here.

Additional information regarding the Patent Quality Chat webinar series can be found on the USPTO's Patent Quality Chat webpage.
Zircore, LLC v. Straumann Manufacturing, Inc. (E.D. Tex. 2017)

February 2, 2017

Method for Manufacturing Product (Dental Crown) Found to be Patent Eligible

By Joseph Herndon —

Zircore sued Straumann Manufacturing for patent infringement in the U.S. District Court for the Eastern District of Texas (Marshall Division) of three patents including U.S. Patent No. 7,967,606. Straumann moved to dismiss Zircore's allegations with respect to the '606 patent for failure to state a claim, contending that the '606 patent claims are not patent eligible under 35 U.S.C. § 101. The Court denied the motion and found that the '606 patent was not directed to an abstract idea, but alternatively, was directed to a method of manufacturing physical crown copings for prosthodontics. This was found to be necessarily rooted in the physical world.

The '606 Patent

When a patient requires a tooth replacement, a three-dimensional model of the patient's mouth is prepared. Using the model of the patient's mouth, a lab technician will fit a metal portion of an abutment into an appropriate location in the model. The model will then be scanned. The scan provides data about an orientation of a metal insert within the model of the mouth and also data about the existing teeth surrounding the position of the abutment. The data from the scan, along with stored data about the standard shape of the metal insert to which the ceramic portion is to be mounted, is used to determine and design the appropriate shape for the ceramic portion of the abutment. At the same time, the shape of the coping is internally designed, using the data so that the coping will fit over the designed ceramic portion of the abutment.

The invention includes designing the coping and infrastructure by first determining the shape and orientation of the final crown, subtracting a thickness for the crown from the shape to determine the shape and orientation of a coping, and subtracting a thickness for the coping to form the shape and orientation of an abutment.

The invention allows both the coping at the ceramic portion of the abutment to be manufactured from a single block, significantly reducing the amount of material required. In addition, the inventive system significantly reduces the amount of labor necessary to manufacture the coping and the abutment. Because the abutment is custom manufactured, a superior mounting surface is achieved, regardless of the orientation of the metal insert with the mouth.

Figure 2 of the '606 patent is reproduced below, and diagrammatically illustrates the manufacturing process.

Claim 1 is representative and reproduced below:

1. A method of manufacturing custom crown copings and infrastructures comprising the steps of:
    preparing a three-dimensional model of a patient's mouth;
    fitting an implant abutment insert into the model;
    storing data about the implant abutment insert standard size and shape in a file;
    scanning the model while the implant abutment insert is in the model;
    utilizing the implant abutment insert size data and data from said scanning step to determine and design a core to fit over the insert and at the same time determine and design a coping to fit over the core; and
    manufacturing said core and said coping.

Patent Eligibility

In assessing subject matter eligibility, a court must first determine whether the claims at issue are directed to a patent ineligible concept. If the claims are directed to an ineligible concept, the court must then consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent eligible application.

Straumann alleged that the claims are directed to the abstract idea of designing two components at the same time. This highly generic view of the claims was rejected by the Court.

The Court found that Straumann isolated two steps from the '606 patent claims, the combination of which is allegedly the point of novelty, and ignored the remainder of the claims. Contrary to Straumann's (Defendants) assertion, the '606 patent claims are directed to a method of manufacturing physical crown copings for prosthodontics.

The '606 patent describes a physical process for collecting information about a patient's mouth, preparing a three-dimensional model of the mouth, scanning the model, and on the basis of data collected from this process, manufacturing the custom crown coping. The Court found that the context of the patent as a whole suggests that the invention is rooted in the physical world.

The Defendants suggested that the claims, at least on their face, appear to include certain steps that could be construed as computerized steps, and thus steps that could arguably be carried out mentally. But the Defendants cited no authority for the proposition that a claim reciting a method of manufacturing becomes abstract simply because it includes modeling or involves the use of computerized data.

The Court found that the '606 patent claims look nothing like the claims found to be abstract in previous cases, including claims within the two major abstract categories — those directed solely to collecting and analyzing information, and those involving fundamental economic and conventional business practices.

The Court appeared to take a realistic and pragmatic view of the claim, namely, that it is directed to manufacturing custom crown copings and infrastructures, which is necessarily rooted in in the physical world.

Accordingly, because the Court found that the '606 patent claims are not directed to an abstract idea, the Court found that Zircore had plausibly stated a claim for patent infringement and the motion was denied.

Report and Recommendation by Magistrate Judge Roy S. Payne
Speedtrack Inc. v. Amazon.com, Inc. (N.D. Cal. 2017)

February 1, 2017

File-Searching Software Patent Found to be Patent Eligible

By Joseph Herndon —

Speedtrack sued Amazon for patent infringement of U.S. Patent No. 5,544,360 in the United States District Court for the Northern District of California. Amazon filed a motion to dismiss alleging that the '360 patent was invalid under 35 U.S.C. § 101 for lack of patent eligible subject matter. The Court denied Amazon's motion to dismiss, and found the patent, which is directed generally to software for accessing stored data files, to not be directed to any abstract idea.

Patent Eligibility

Initially, the Court addressed whether the challenge under Section 101 at the motion to dismiss stage, prior to conducting claim construction, was proper. The Court quickly indicated that where, as here, the basic character of the claimed subject matter is readily ascertainable from the face of the patent, the Court found that it may determine patentability at the motion to dismiss stage.

For patent eligibility, the analysis, generally known as the Alice framework, follows a two-step test for distinguishing patents that claim laws of nature, natural phenomenon, and abstract ideas from those that claim patent eligible applications of those concepts. First, courts must determine whether the claims at issue are directed to a patent ineligible concept, such as an abstract idea. If the claims are not directed to an abstract or otherwise patent ineligible idea, the claims are considered patentable and the inquiry ends. If, however, the court finds the claims are in fact directed to ineligible or abstract ideas, the court must consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent eligible claim.

It is clear that neither the Supreme Court nor the Federal Circuit has established a definitive rule to determine what constitutes an abstract idea sufficient to satisfy the first step of the Mayo/Alice inquiry. Rather, instead of setting forth a bright line test separating abstract ideas from concepts that are sufficiently concrete so as to require no further inquiry under the first step of the Alice framework, courts are tasked with making the evaluation whether any particular claims are directed to a patent ineligible abstract idea by comparing claims at issue to those already found to be directed to an abstract idea in previous cases.

In the context of computer-implemented inventions, courts have considered whether the claims purport to improve the functioning of the computer itself, which may suggest that the claims are not abstract, or instead whether computers are invoked merely as a tool to carry out an abstract process.

Turning to the '360 patent, it describes a computer file control system that includes a File Category Table (FCT) and a File Information Directory (FID) to store information about user-defined categories and information linking such categories to specific files. The invention uses the information stored in the FCT and FID to quickly and easily access files in the file system. The invention includes a graphical user interface for defining categories, associating files with particular categories, and defining search filters.

In the process of search and retrieval, the invention overcomes the problem of search filter definition, ensuring that the user defines a filter which will always find at least one file, thus avoiding wasting time in searching for data that cannot be matched. This is achieved in two ways. First, the user is not required to type the key words to search; instead, the user simply chooses the words in random order from pick lists, making mistyping impossible. Second, as the user builds the search filter definition, categories which would find no data are automatically excluded as pick list possibilities.

Claim 1 of the '360 patent recites:

1. A method for accessing files in a data storage system of a computer system having means for reading and writing data from the data storage system, displaying information, and accepting user input, the method comprising the steps of:
    (a) initially creating in the computer system a category description table containing a plurality of category descriptions, each category description comprising a descriptive name, the category descriptions having no predefined hierarchical relationship with such list or each other;
    (b) thereafter creating in the computer system a file information directory comprising at least one entry corresponding to a file on the data storage system, each entry comprising at least a unique file identifier for the corresponding file, and a set of category descriptions selected from the category description table; and
    (c) thereafter creating in the computer system a search filter comprising a set of category descriptions, wherein for each category description in the search filter there is guaranteed to be at least one entry in the file information directory having a set of category descriptions matching the set of category descriptions of the search filter.

With respect to the '360 patent, the Court found that the claimed invention is not merely an abstract idea, but rather it claims an improved method for accessing files in a data storage system of a computer system. The Court found that the invention solved a challenge in which a search in a hierarchical directory structure did not guarantee a result. Here, the invention addressed that concern with the mechanism of allowing the user to search only those terms that are actually contained in the file description, thereby eliminating the possibility that the user may mistype or misspell a search term. The claimed invention seeks to remedy the problem by ensuring that the user is guaranteed a search result because (1) the user is not required to type the key words to search; instead the user simply chooses the words from pick lists, making mistyping impossible; and (2) as the user builds the search filter definition, categories which would find no data are automatically excluded as pick list possibilities.

Thus, the Court found this to be an improvement in the context of computer capabilities when accessing files stored in a computer data storage device that both guarantees a search result and makes mistyping impossible.

As a result, the Court found that the '360 patent is not directed to an abstract idea. Because the Court found that the present invention is not directed to an abstract idea, but rather is directed to a specific improvement in the way computers operate, the Court did not need to address whether the claims contain a limiting inventive concept. But the Court further noted that the claims here recite specific implementation of a system of retrieving and accessing files stored in a computer storage device, using the combination of a "category description table," a "file information directory," and a "search filter" which, in combination, guarantees a search result and makes mistyping impossible. The Court found that this recited an improvement in computer technology, and would satisfy step two.

As a result, the Court found that the claims are not directed to an abstract or ineligible idea, and thus, the claimed system is patent-eligible under Section 101. Thus, the Court denied the motion to dismiss the complaint.

A positive result here for patentees, in that a software patent was found to be patent eligible. The key here seems to be that the claims were characterized as an improved method that solved a challenge of prior art file retrieval processes. This further enabled the Court to state that the invention was an improvement in the context of computer capabilities. Such techniques may be useful for patentees to build these types of description into the patent application itself to put the patentee in a better position to withstand any section 101 challenges.

Order Denying Motion to Dismiss by District Judge Jeffrey S. White

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